Ex Parte 7000325 et alDownload PDFBoard of Patent Appeals and InterferencesOct 31, 201195001130 (B.P.A.I. Oct. 31, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,130 02/12/2009 7000325 36446-80536 3469 26294 7590 10/31/2011 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 EXAMINER WEHNER, CARY ELLEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 10/31/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Bunzl Processor Distribution LLC, Requester and Appellant, v. Patent of Bettcher Industries, Inc., Patent Owner and Respondent ____________ Appeal 2011-007091 Reexamination Control 95/001,130 Patent 7,000,325 B2 Technology Center 3900 ____________ Before RICHARD E. SCHAFER, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-007091 Reexamination Control 95/001,130 Patent 7,000,325 B2 2 Third-Party Requester Bunzl Processor Distribution LLC (“Requester”) requests rehearing under 37 C.F.R. § 41.79 of our decision mailed July 28, 2011 (hereinafter “Decision”), in which we affirmed the Examiner’s refusal to reject claims 1-13 of United States Patent 7,000,325 B2 (hereinafter the “‘325 Patent”) on various grounds. (Request for Rehearing filed August 26, 2011, hereinafter “Request,” at 1.) Patent Owner Bettcher Industries, Inc. (“Patent Owner”) urges that the Request should be denied. (Respondent/Patent Owner’s Comments in Opposition to Request for Rehearing under 37 C.F.R. § 41.79(c), hereinafter “PO Response,” at 1.) Requester contends that the Board misapprehended or overlooked:1 1. the teachings of Decker (U.S. Patent 4,854,046, issued August 8, 1989) (Request 2-3); and 2. the reasons offered by Requester in support of a conclusion of obviousness (Request 4-6). Decker Requester argues that we misapprehended that one of ordinary skill in the art would have appreciated that radial surface 91 of Decker is a bearing surface. (Request 2-3.) We do not agree. As we stated in the Decision, Decker does not disclose that surface 91 is a bearing surface. (Decision 10.) Indeed, Decker discloses surface 91 as being “close to the housing lip,” 1 Requester’s assertion that our decision was somehow influenced by the proceedings in the concurrent litigation is baseless and without merit. (Request 2.) We simply noted that the ‘325 Patent was involved in litigation. (Decision, 2-3; PO Response 2-3.) Thus, we will not further address Requester’s comments in this regard. Appeal 2011-007091 Reexamination Control 95/001,130 Patent 7,000,325 B2 3 which is contrary to the position that surface 91 contacts the housing lip. (See Decision, FF 3.)2 The Requester did not provide persuasive evidence in the appeal in support of the assertion that a person of ordinary skill in the art would understand surface 91 to be a bearing surface in order to prevent axial movement of the blade. To the contrary, the Declaration of Whited, which is of record, indicates that the top wall 80 and the gear teeth 42 provide the second bearing surface to prevent axial movement of the blade. (Decl. Whited ¶ 6; see also PO Response at 3-4). Regarding Requester’s reliance on the Background of the ‘325 Patent as an admission that contact between the radial surface and housing was known to occur in the rotary knife of Decker (Request 3), we agree with Patent Owner that there is no indication that such contact was known in the art as opposed to a problem identified through research of the inventor. (PO Response 6.) Requester has identified no other persuasive evidence to support the argument that one of ordinary skill in the art would have recognized surface 91 as a bearing surface. Accordingly, we did not misapprehend the teachings of Decker. Obviousness Initially, we disagree with Requester that we overlooked the obviousness factors set forth in KSR Int’l v. Teleflex Inc., 550 U.S. 398 2 Requester’s argument that claims 7 and 8 of Decker provide support for the position that surface 91 is a bearing surface (Request 3, FN 2) is a new argument that is beyond the scope of rehearing. See 37 C.F.R. 41.79(b)(1). In addition, Patent Owner has provided arguments that the claims discussed by Requester are not inconsistent with Decker’s disclosure that surface 90 is the only identified bearing surface. (PO Response 4, FN 4.) Appeal 2011-007091 Reexamination Control 95/001,130 Patent 7,000,325 B2 4 (2007), and that we misapprehended the issue of whether the claim limitations are disclosed by the prior art of record in relation to whether the combination would have been obvious. (Request 7.) First, the Decision quotes directly from KSR for the relevant principles of law dispositive to the present appeal. (Decision, p. 8-9; see also PO Response 5.) In addition, we acknowledged in the Decision the teachings of Decker, Nakanishi, Cooper, and Lew. (Decision 9; FF 1-7.) Thus, we did not misapprehend or overlook the factors set forth in KSR or the teachings of each individual prior art reference. Consistent with the principles set forth in KSR, we stated that Requester’s proposed rejections lacked “adequate rational underpinning on this record to support Requester’s position that that the invention claimed in the '325 Patent is ‘merely a combination of the prior art annular blade described in Decker and the prior art double frustoconical bearing race.’” (Decision 9.) We then explained that the independent teaching of each of the claimed elements is not sufficient basis from which to conclude the claims would have been obvious without sufficient rational underpinning or reasoning as to how the proposed combination meets the claims. (Decision 9-10; see also PO Response 6-7.) We further explained that in the instant case, Requester had not adequately explained how the teachings of the prior art references would be combined in light of the absence in Decker’s disclosure that surface 91 is a bearing surface and the statements made in the Declaration of William D. Macy executed on June 25, 2009 that “‘Design constraints determine the exact nature of bearing design.’” (Decision 10-11.) As we noted, Requester Appeal 2011-007091 Reexamination Control 95/001,130 Patent 7,000,325 B2 5 has not made a sufficient showing of a defect in the specific bearing design in Decker that would be addressed by applying the two point contact bearing system of the prior art. (Decision 11.) Thus, contrary to Requester’s arguments, it is unclear whether one of ordinary skill in the art would have appreciated that the bearing systems disclosed in the secondary references would improve the bearing system in Decker. (See Request 5-6.) Accordingly, upon review of our decision, we did not overlook the application of KSR to the proposed rejections of the claims. Therefore, we decline to make any changes in the Decision mailed July 28, 2011. Accordingly, the Request for Rehearing is denied. DENIED PATENT OWNER: TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 THIRD-PARTY REQUESTER: CLYDE L. SMITH THOMPSON COBURN LLP ONE BANK PLAZA ST. LOUIS, MO 63101 Copy with citationCopy as parenthetical citation